Gene S. Jacobsen v. Deseret Book Company

Dr. Gene S. Jacobsen was a prisoner of war in the Philippines and Japan during World War II. After returning from military service, Dr. Jacobsen wrote his personal memoir entitled Who Refused to Die. In gripping detail, Who Refused to Die recounts Dr. Jacobsen's survival of the Bataan Death March and subsequent years of imprisonment and torture in various work camps.

In 1997, Deseret Book Company ("Deseret Book") published the first of a five-volume series written by Dr. Dean Hughes entitled Children of the Promise.(1)

The series is a fictional work written primarily for members of the Church of Jesus Christ of Latter-day Saints. It portrays a Latter-day Saint family's life during World War II. The story of Wally Thomas, one of the family's sons, closely follows Dr. Jacobsen's experiences as related in Who Refused to Die.

In 1999, Dr. Jacobsen filed a complaint against Dr. Hughes and Deseret Book seeking an injunction and damages for copyright infringement under 17 U.S.C. §§ 106 and 501. After nearly a year of discovery, Deseret Book filed a motion asking the district court to dismiss the complaint for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6) and award Deseret Book attorney fees. Dr. Hughes joined Deseret Book's Rule 12(b)(6) motion and filed a motion for summary judgment on several affirmative defenses. The district court granted the Rule 12(b)(6) motion, granted summary judgment on the affirmative defense of laches, and denied the request for attorney fees.

On appeal, Dr. Jacobsen challenges the district court's dismissal of his complaint pursuant to Fed. R. Civ. P. 12(b)(6) as well as the court's granting summary judgment on the affirmative defense of laches. Dr. Jacobsen also appeals the district court's refusal to strike defendants' expert reports or allow Dr. Jacobsen additional time to designate expert witnesses. Dr. Hughes and Deseret Book filed a cross-appeal seeking attorney fees. We exercise jurisdiction under 28 U.S.C. § 1291 and reverse the 12(b)(6) dismissal, the grant of summary judgment on laches, and the refusal to strike the expert reports. Both Dr. Jacobsen's request for additional time to designate experts and Dr. Hughes' and Deseret Book's request for attorney fees are moot.

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Dr. Jacobsen argues the district court erred in granting Dr. Hughes' and Deseret Books' motion to dismiss.

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We cannot affirm the dismissal for failure to state a claim unless, after considering the complaint, Who Refused to Die, and the Children of the Promise series in the light most favorable to Dr. Jacobsen, it appears beyond doubt Dr. Jacobsen can prove no set of facts in support of his claim that would entitle him to relief. Stidham v. Peace Officer Standards & Training, 265 F.3d 1144, 1149 (10th Cir. 2001). To establish copyright infringement, Dr. Jacobsen must prove "(1) ownership of a valid copyright and (2) 'copying of constituent elements of the work that are original.'" TransWestern Publ'g Co., Inc., v. Multimedia Mktg. Assocs., 133 F.3d 773, 775 (10th Cir. 1998) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)). The complaint clearly alleges Dr. Jacobsen has a federally registered copyright for Who Refused to Die. Thus, we need only determine whether the complaint and incorporated documents are sufficient to allege Dr. Hughes and Deseret Book copied Who Refused to Die.

Whether Dr. Hughes and Deseret Book copied Who Refused to Die "involves two distinct inquiries: first, whether [Dr. Hughes], as a factual matter, copied [Dr. Jacobsen's] work, and second, whether, as a mixed issue of fact and law, those elements that were copied were protected." Country Kids 'N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir. 1996). After reviewing the complaint and incorporated documents, we are satisfied Dr. Jacobsen could present evidence showing Dr. Hughes copied many of the experiences Dr. Jacobsen recorded in Who Refused to Die. The difficulty in this case arises in determining whether Dr. Hughes copied only unprotected facts or instead impermissibly copied Dr. Jacobsen's original expression.

It is well settled "no author may copyright facts or ideas." Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 547 (1985). Thus, the copyright of a nonfiction work protects only "those aspects of the work ­ termed 'expression' ­ that display the stamp of the author's originality." Id. See also Feist, 499 U.S. at 348 ("[C]opyright protection may extend only to those components of a work that are original to the author."). "[A] copyright does not prevent subsequent users from copying from a prior author's work those constituent elements that are not original ­ for example ... facts, or materials in the public domain ­ as long as such use does not unfairly appropriate the author's original contributions." Harper & Row, 471 U.S. at 548 (quotation marks and citations omitted).

In order to prove copying of legally protectible material, a plaintiff must typically show substantial similarity between legally protectible elements of the original work and the allegedly infringing work. Country Kids 'N City Slicks, 77 F.3d at 1284. "This is primarily a qualitative rather than a purely quantitative analysis, and must be performed on a case-by-case basis." Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 839 (10 Cir. 1993) (citation and footnote omitted).

To decide whether two works are substantially similar we ask "'whether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protectible expression by taking material of substance and value.'" Country Kids 'N City Slicks, 777 F.3d at 1288 (quoting Atari, Inc. v. North Am. Phillips Consumer Elecs. Corp., 672 F.2d 607, 614 (7th Cir. 1982)). Determining whether there is substantial similarity in cases involving fact-based works is particularly difficult.

[T]he measure of how substantial a "substantial similarity" must be may vary according to circumstances. For many copyrights represent significant creative effort, and are therefore reasonably robust, whereas others reflect only scant creativity; the Supreme Court labels the latter "thin." It would seem to follow analytically that more similarity is required when less protectible matter is at issue. Thus, if substantial similarity is the normal measure required to demonstrate infringement, "supersubstantial" similarity must pertain when dealing with "thin" works.

In ruling on the motion to dismiss, the district court found "[Dr.] Hughes copied some 'facts' from [Dr.] Jacobsen's memoir, but not significant original expression." Relying on Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991) and TransWestern Publishing Co. v. Multimedia Marketing Associates, 133 F.3d 773 (10th Cir. 1998), two cases involving copied telephone directories, the district court applied a supersubstantial similarity test rather than the substantial similarity requirement traditionally applied in copyright infringement cases. The court noted several differences between Who Refused to Die and the character Wally in the Children of the Promise Series.

Much of the Children of the Promise series deals with spiritual matters and a [sic] most of the volumes are devoted to Wally's large and extended family. [Dr.] Jacobson's [sic] memoir, on the other hand, does not emphasize spiritual matters except in passing.... Further, the memoir deals only with [Dr.] Jacobsen's experiences in a limited matter and does not expand much over time and geography as do [Dr.] Hughes' novels. It is clear to this court that Wally is not Gene Jacobsen.

Consequently, the district court concluded under "the ... supersubstantial similarity test it is clear that [Dr.] Hughes did not copy any protectable aspects of the memoir."

We disagree. First, we conclude the district court gave undue weight to language in Feist and TransWestern incorrectly applying a "supersubstantial similarity test" in evaluating whether Dr. Hughes and Deseret Book copied protected elements of Who Refused to Die. In Feist, the Supreme Court held "the copyright in a factual compilation is thin." Feist, 499 U.S. at 349. In TransWestern, we stated "if substantial similarity is the normal measure required to demonstrate infringement, 'supersubstantial' similarity must pertain when dealing with thin works." TransWestern, 133 F.3d at 776 (quoting 4 Nimmer, supra, § 13.03[A], at 13.28 (1997)). The district court seized this language and applied what it called "the Tenth Circuit supersubstantial similarity test." We do not read TransWestern so broadly as to require us to apply a supersubstantial similarity test to all fact-based works. Rather TransWestern merely reaffirmed "the measure of how substantial a 'substantial similarity' must be may vary according to circumstances." 4 Nimmer, supra, § 13.03[A], at 13-28 (2000). Because fact-based works differ "as to the relative proportion of fact and fancy," Harper & Row, 471 U.S. at 563, the quantum of similarity required to establish infringement differs in each case. Merely applying a supersubstantial similarity test to all fact-based works would ignore the differences between "sparsely embellished maps and directories" and "elegantly written biography." Id. In short, Who Refused to Die involves more creative effort and original expression than the telephone directories at issue in Feist and TransWestern. Therefore, Dr. Jacobsen could prove substantial similarity with less similarity than we would require if the allegedly infringed work were a telephone directory.

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Reversed

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